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THE MIS-“CONCEPTION” OF BEING AN INVENTOR

Posted in Patent Counseling & Strategies

Scientists often confuse “authorship” in a manuscript with “inventorship” in a patent application or a patent.  More often than not, scientists will list everyone involved with an invention or a manuscript describing the invention, as inventors while filing a patent application.  These include individual(s) involved in determining whether the invention works, writing the analysis, or supervisors.  However, inventorship in a patent bestows exclusive property rights to patent holders as reward for innovation and therefore, there are strict legal requirements for who qualifies as an inventor for a patent.   Incorrect inventorship on a patent can jeopardize the validity of the patent.  On the point of inventorship, in the case of Pitts v. Hall (2 Blatchf., 229), Judge Nelson said:

“A person, to be entitled to the character of an inventor, within the meaning of the Act of Congress, must himself have conceived the idea embodied in his improvement.  It must be the product of his own mind and genius, and not of another’s.”

Conception is more or less the “touchstone of inventorship.” A person is deemed to be an inventor of the subject matter of a claimed invention if he conceives of it.  Conception is defined as “the complete performance of mental part of the inventive act….” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).  Where the original conception is complete, a practitioner is able to reduce the invention to practice with nothing more than routine skill.  In such a scenario, the contributor to the conception of the claimed invention, and not the practitioner, who reduces the invention to practice, is an inventor.  Under these criteria, not all authors of a manuscript describing the invention may qualify as inventors on a patent application or a patent. In today’s collaborative environment, where teams of people work to produce a “joint invention”, these rights and restrictions take on new significance.

From time to time, inventorship on a patent application may have to be reviewed because of changed circumstances.  For example, if during prosecution of a patent application, the claims containing an inventor’s contribution are cancelled, then the listed inventor may no longer be an inventor on the patent application.  Inventorship errors are more difficult to correct in issued patents than in pending applications and require the cooperation and consent of all inventors and assignees.  Thus errors involving inventorship should be addressed as early as possible.  The AIA has streamlined the process for correcting inventorship and made it much easier to correct such errors.  Specifically, AIA removes the requirement of proving an absence of deceptive intent for correcting inventorship.  Additionally, the consent of an assignee is no longer needed.  However, an intentional failure to name inventor(s) by anyone associated with patent prosecution, including the named inventors, may result in a finding of unenforceability due to inequitable conduct against the named inventor(s).

An omitted inventor also has several options for correcting inventorship.  The omitted inventor can choose to file a written third party protest against the other inventors’ application alleging fraud or incorrect inventorship or file their own application to provoke an interference proceeding.  Finally, the unnamed inventor can also choose to file an action in district court to correct inventorship.  However, a presumption of laches applies to any action brought after 6 years from the date that the patent issued.

1. 35 U.S.C. § 116

2. 35 U.S.C. § 256

3. 35 U.S.C. § 262

4. 37 C.F.R. §  1.48 (a) – (f)

5. 37 C.F.R. § 1.291

6. Fina Oil v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).

7. Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).

8. Burroughs Wellcome Co. v. Barr Lab., 40 F.3d 1223, 1229 (Fed. Cir. 1994).

9. Perspetive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 56 U.S.P.Q.2d 1001 (Fed. Cir. 2000).

10. Frank’s Casing Crew and Rental Tools v. Pmr Techs., 292 F.3d 1363, 63 U.S.P.Q.2d 1065 (Fed. Cir. 2002).